State Farm Mutual Automobile Insurance Company v. ronald hilton / Palm Valley Insurance, Inc.
Claim Number: FA2007001904439
Complainant is State Farm Mutual Automobile Insurance Company (“Complainant”), represented by Nathan Vermillion of State Farm Mutual Automobile Insurance Company, Illinois, USA. Respondent is ronald hilton / Palm Valley Insurance, Inc. (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <statefarminsuranceworldgolfvillage.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 16, 2020; the Forum received payment on July 16, 2020.
On July 17, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <statefarminsuranceworldgolfvillage.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 20, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 10, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@statefarminsuranceworldgolfvillage.com. Also on July 20, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 11, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <statefarminsuranceworldgolfvillage.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
2. Respondent does not have any rights or legitimate interests in the <statefarminsuranceworldgolfvillage.com> domain name.
3. Respondent registered and uses the <statefarminsuranceworldgolfvillage.com> domain name in bad faith.
B. Respondent failed to submit a response in this proceeding.
Complainant, State Farm Mutual Automobile Insurance Company, has been offering financial and insurance services under the State Farm name for decades. Complainant holds a registration for the STATE FARM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 5,271,354, registered on August 22, 2017).
Respondent registered the <statefarminsuranceworldgolfvillage.com> domain name on June 21, 2019, and uses it to compete with Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Panel finds that Complainant has rights in the STATE FARM mark based on registration with the USPTO. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <statefarminsuranceworldgolfvillage.com> domain name uses the STATE FARM mark and merely adds the descriptive term “insurance” and the geographic term “world golf village,” and the “.com” gTLD. These changes do not distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (finding that the addition of geograhic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). Complainant notes that the term “insurance” directly relates to Complainant’s business and “world golf village” is a geographic location where some of Complainant’s independent contractors are located. The Panel finds that Respondent’s <statefarminsuranceworldgolfvillage.com> domain name is confusingly similar to Complainant’s STATE FARM mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <statefarminsuranceworldgolfvillage.com> domain name because Respondent is not commonly known by that name and is not affiliated with Complainant. Complainant has not authorized Respondent to use the STATE FARM mark in any way. The WHOIS information lists “Palm Valley Insurance, Inc. / Ronald Hilton” as the registrant of the disputed domain name. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus has no rights under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sep. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”); see also Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”).
Complainant contends that Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use and instead uses the disputed domain name to trade off of the goodwill associated with Complainant. The use of a domain name to create confusion and imply an affiliation with a complainant, and thereby benefit from the goodwill associated with a complainant, is not a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Pfizer Inc. v. Internet Gambiano Prods LLC., D2002-0325 (WIPO June 20, 2002) (finding that because the VIAGRA mark was “clearly well-known” at the time of the respondent’s registration of the domain name the panel could infer that the respondent acted for the purpose of “capitalizing on the confusion created by the domain name’s similarity to the [m]ark”). Complainant provides a screenshot of Respondent’s competing website at <statefarminsuranceworldgolfvillage.com>. The Panel finds that Respondent is using the disputed domain name to compete with Complainant. This use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <statefarminsuranceworldgolfvillage.com> domain name in bad faith because Respondent uses the domain name to attract Internet users to Respondent’s competing website for commercial gain by implying an affiliation with Complainant. Under Policy ¶ 4(b)(iv), the use of a disputed domain name to offer competing goods or services can be evidence of bad faith. See ShipCarsNow, Inc. v. Wet Web Design LLC, FA1501001601260 (Forum Feb. 26, 2015) (“Respondent’s use of the domain name to sell competing services shows that Respondent is attempting to commercially benefit from a likelihood of confusion. Therefore the Panel finds that a likelihood of confusion exists, that Respondent is attempting to commercially benefit from Complainant’s mark, and that Complainant has rights that predate any rights of the Respondent, all of which constitutes bad faith under Policy ¶ 4(b)(iv).”); see also Amazon.com, Inc. v. Shafir, FA 196119 (Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”). The Panel finds that Respondent uses the disputed domain name to offer competing services, in bad faith under Policy ¶ 4(b)(iv).
Complainant contends that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent is not an independent contractor agent of Complainant and is not authorized to sell Complainant’s services. Bad faith may be found when a respondent who is not an authorized distributor implies a relationship with a complainant and uses complainant’s mark in a domain name without permission. See Labrada Bodybuilding Nutrition, Inc. v. Garrett, FA 94293 (Forum Apr. 27, 2000) (finding bad faith where the respondent registered the domain names six months after the respondent’s distributor agreement with the complainant was terminated); see also Stanley Logistics, Inc. v. Motherboards.com, FA 128068 (Forum Dec. 2, 2002) (finding that the respondent, through the use of the complainant’s mark to redirect Internet users to a website selling the complainant’s product, placed itself without the complainant’s consent in a preferred position with respect to other distributors, which caused consumer confusion and evidenced bad faith registration and use of the domain name). Accordingly, the Panel finds further bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent had knowledge of Complainant’s rights in the STATE FARM mark because of Complainant’s long-term use of the mark and the “statefarm.com” domain name. The Panel agrees and finds bad faith registration and use under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <statefarminsuranceworldgolfvillage.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 12, 2020
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